Chapter 2 – The EPO as a PCT receiving Office
2.14 How can an applicant claim the priority of an earlier application?
2.14.001A declaration in an international application claiming the priority of one or more earlier applications filed in or for any state party to the Paris Convention for the Protection of Industrial Property ("Paris Convention") or in or for any member of the World Trade Organization (WTO) that is not party to the Paris Convention must always indicate the date on which the earlier application was filed, the state or states in which it was filed and the application number(s) under which it was filed. If the earlier application was a regional one, it suffices to give the name of the patent-granting authority under the regional agreement – i.e. "EP" in the case of a European application – instead of indicating the states party to the regional agreement (Box No. VI of the PCT request form).
Art. 2(i) PCT, Art. 8(1) PCT
R. 2.4, 4.10 PCT
OJ 2007, 692
WIPO PCT Guide 5.007,
5.057-5.071,
6.038-6.044
2.14.003The applicant claiming the priority of an earlier application must be either the applicant who filed it or that applicant's successor in title. If the earlier application or the priority right was transferred to the applicant, that transfer must have taken place before the filing date of the international application (Box No. VIII (iii) of the PCT request form) and must be valid under the applicable national provisions. For example:
GL/EPO A‑III, 6.1
OJ 2014, A33
PCT Newsletter 1/2022, 8
–The earlier application from which priority is claimed names X as applicant. The international application names company A as applicant. X must have validly transferred the earlier application or the priority right to A before the filing date of the international application.
2.14.004Where joint applicants file an international application and claim the priority of an earlier application, it is sufficient that one of them is the applicant who filed the earlier application or that applicant's successor in title. Since the international application has been filed jointly – which shows that the applicant who filed the earlier application consents – there is no need for a special transfer of priority right to the other (additional) applicant(s). For example:
–The earlier application from which priority is claimed names X as applicant. The international application names X and company A as applicants. A transfer of the priority right from X to A is not required.
–The earlier application from which priority is claimed names X as applicant. The international application names companies A and B as applicants. X must have validly transferred the earlier application or the priority right to either A or B before the filing date of the international application. A transfer to both A and B is not required but would also fulfil the formal requirements for claiming priority.
2.14.005If the earlier application was filed by several applicants, all of them must be applicants for the international application or have transferred their rights to the applicant, or one of the applicants, for the international application. It is not sufficient if only one of several applicants filing the earlier application is named as applicant for the international application. For example:
–The earlier application from which priority is claimed names X, Y and Z as applicants. The international application names company A as applicant. X, Y and Z have not transferred their rights but are all named – together with company A – as applicants in the PCT request form (PCT/RO/101).
–The earlier application from which priority is claimed names X, Y and Z as applicants. The international application names company A and X as applicants. Y and Z must have validly transferred their rights to the earlier application to either A or X before the filing date of the international application.
2.14.006As formal entitlement to priority is not examined during the international phase, proof of entitlement on the international filing date must be submitted in the proceedings before the EPO (only) if the validity of the priority right claimed becomes relevant. However, for a successor in title to enjoy a priority right in proceedings before the EPO, the earlier application or the priority right must have been transferred before the filing date of the international application and any deficiencies cannot be remedied after that, and especially not in the European phase. Applicants claiming the priority of an earlier application and planning to enter the European phase are therefore strongly advised to ensure that, as at the international filing date, all applicants who filed the earlier application are either mentioned as applicants for the international application or have validly transferred their rights to the applicant, or one of the applicants, for the international application.
2.14.007Priority cannot be validly claimed unless the international application is filed within the priority period. "Priority period" means the period of 12 months from the filing date of the earlier application whose priority is claimed in the international application. The date of filing of the earlier application is not included in the priority period.
WIPO PCT Guide,
5.059